IP
Litigation

Hahn & Hahn
Inc has over 50 years experience in all aspects of IP litigation including
infringement and validity cases for patents, trademarks and designs,
as well as acting in counterfeit goods, unlawful competition and trade
secrets matters. Please contact Janusz Luterek (janusz@hahn.co.za)
for further information in this regard.

1. Patent
Infringement and Validity of Granted Patents

1.1 Infringement
and Defences Thereto In order to be successful in an infringement
matter in South Africa a patentee must show that an infringing device,
system, apparatus, or method includes all of the essential integers
of at least one independent claim of a patent.

In defence,
an alleged infringer can deny infringement or rely on invalidity of
the patent on any one of the grounds set out in Section 61 of the
Patents Act 57 of 1978 and/or on use prior to the priority date of
the patent in question i.e. the so called "Gillette Defence".

Furthermore,
an infringer can counterclaim that the patent in question is invalid
and request the Commissioner of Patents to revoke a granted patent.

The patentee
may, where there is subject matter in the patent which could form
the basis for a valid patent, apply to the Commissioner for leave
to amend the patent which, if granted, will result in the scope of
the patent being reduced but the amended patent being valid. This
may or may not get the infringer off the hook as the amended patent
may still be infringed.

An infringement
case is heard by the Court of the Commissioner of Patents, a division
of the High Court, and may be brought either by way of Summons where
damages are sought and will require oral evidence to be led, or by
way of Motion where only an interdict, whether urgent, interim, or
final, is sought in which case the evidence is by way of Affidavit
in most cases. An action brought by way of Summons may take anywhere
from 6 to 18 months before it is heard by the court of first instance
whereas an application by way of Motion may only take 3 to 6 months
to be heard.

It is usual
to appoint counsel (barristers) to assist in the litigation. Depending
on the complexity of the matter, both a junior and a senior counsel
may be appointed. Thus it is not unusual for a matter in which only
a junior counsel is employed to cost between EUR25000 and EUR62500
in the court of first instance, and the same costs may be expected
in each stage of an appeal.

In an infringement
action, besides an interdict, the court may award damages, or reasonable
royalties in lieu of damages, and a portion of the costs in suit.
Please note however that an order of costs usually only covers about
50 % of the actual costs incurred and are awarded at the discretion
of the Commissioner of Patents.

1.2 Validity

In order to
be valid, the claims of a South African Patent must be novel and inventive
and all formal requirements ought to have been complied with.

The novelty
requirement is an absolute requirement i.e. an invention as claimed
should be new anywhere in the world, not just in South Africa.

Likewise,
the inventive step requirement is an absolute one.

The South
African Patent Office is a non-examining office and all patent applications
which meet the formal requirements are granted.

It is not
normal practice for Patent Attorneys to conduct patent searches for
clients unless specifically instructed to do so as the costs of the
searches would often exceed the costs of preparing and filing the
patent several fold.

Furthermore,
the South African Patent Office records are in a complete disarray
and it is not possible to conduct a reliable search for South African
Patents at the South African Patent Office.

Yet further,
international databases which may be searched cover only the major
countries of the world and have only scant information on South Africa,
especially data prior to 1994. Thus, even an extensive international
patent search does not have a guaranteed accuracy and it is internationally
accepted that, despite the high cists thereof, database searches have
an accuracy of around 60%.

The validity
of a granted patent may only be challenged by way of an Application
for Revocation before the Court of the Commissioner of Patents and
again, depending on the complexity of the matter, both a junior and
a senior counsel may be appointed. Thus it is not unusual for a matter
in which only a junior counsel is employed to cost between EUR25000
and EUR62500 in the court of first instance, and the same costs may
be expected in each stage of an appeal.